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Judgment in Cases T-85/16 and T-629/16 Shoe Branding Europe BVBA v EUIPO

adidas may oppose the registration, as an EU trade mark, of two parallel stripes on
shoes.

The marks applied for in the case risk taking unfair advantage of adidas’ earlier mark representing three parallel stripes on a shoe.

In 2009 and 2011, the Belgian company Shoe Branding Europe filed an application with the European Union Intellectual Property Office (EUIPO) for registration of two EU trade marks (illustration below, left), one for footwear and the other for safety footwear. The German company adidas opposed registration of those trade marks relying, inter alia, on one of its marks reproduced below on the right:

By decisions of 2015 and 2016, EUIPO allowed adidas’ oppositions and refused registration of the
two marks applied for by Shoe Branding Europe.
In particular, EUIPO considered that, given a certain degree of similarity between the marks at
issue, the identity or the similarity between the goods covered by those marks and the high
reputation of adidas’ earlier mark, there was a likelihood that the relevant public might establish a
link between the marks at issue and that the use of the marks applied for could take unfair
advantage of the reputation of adidas’ mark, without that use being, in the case at hand, justified by
due cause.
By today’s judgments, the General Court dismisses the actions brought by Shoe Branding Europe
against EUIPO’s two decisions and thereby confirms the latter.
According to the Court, EUIPO did not commit an error of assessment in finding, in particular, (i) it
likely that the use of the marks applied for would take unfair advantage of the repute of adidas’
mark and (ii) that Shoe Branding Europe had not demonstrated the existence of due cause for the
use of the marks applied for.
So far as concerns the mark applied for by Shoe Branding Europe in 2009 for footwear, it should
be recalled that the General Court is ruling on this subject for the second time. By judgment of 21
May 2015, the General Court had annulled a previous EUIPO decision which had incorrectly found that there was no similarity whatsoever between the marks at issue. That judgment of the
General Court was upheld by the Court of Justice by order of 17 February 2016 (for details, see
Press Release No. 17/16).

 

Source: https://curia.europa.eu/jcms/jcms/p1_850190/de/

General Court of the European Union, PRESS RELEASE No 24/18, Luxembourg, 1 March 2018, Judgment in Cases T-85/16 and T-629/16


Date: 03-12-2018
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